News & Analysis as of

Patent Infringement Discovery

Jones Day

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

Jones Day on

USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...more

Venable LLP

Patent Litigation Defense 101: What to Know When You’ve Been Sued for Infringement

Venable LLP on

If your company has just been named in a patent infringement lawsuit, you may be facing an unfamiliar and high-stakes process. Patent litigation is unlike most commercial disputes—it involves complex legal standards, highly...more

Goodwin

HyClone Seeks to Quash Amgen’s Subpoena Issued in Amgen/Accord Denosumab BPCIA Litigation

Goodwin on

On May 14, 2025, HyClone Laboratories, LLC (“HyClone”) filed a Motion to Quash in the U.S. District Court for the District of Utah, seeking to quash Amgen Inc.’s (“Amgen”) subpoena to HyClone issued in Amgen’s denosumab BPCIA...more

Patterson Belknap Webb & Tyler LLP

Judge Engelmayer Gets a Handle on “BlenderBottle” Patent Claims and Rejects Assertion of Indefiniteness

Judge Paul A. Engelmayer (S.D.N.Y.) recently construed claim terms at issue in a patent litigation between Plaintiffs Trove Brands, LLC, d/b/a The BlenderBottle Company, and Runway Blue, LLC (collectively, “Trove”) and...more

A&O Shearman

Poster Presentation Tied To Business Objectives Serves As Evidence Of Infringement Of Patented Methods

A&O Shearman on

On February 12, 2025, the United States District Court for the District of Delaware denied defendant Parse Biosciences’s (“Parse”) motions for summary judgment that: (i) Parse had never actually conducted any direct or...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Jones Day

Speculative IPR Discovery Request Not in the Interest of Justice

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“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

Knobbe Martens

New Trial Granted Because “Nearly All” of the Defendant’s Noninfringement Evidence Was Untimely

Knobbe Martens on

The district court erred by admitting untimely expert testimony on noninfringement and by refusing to grant a new trial after the jury found noninfringement. Trudell Medical International (“Trudell”) sued D R Burton...more

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Trudell Medical International Inc. v. D R Burton Healthcare, LLC

Trudell Medical International Inc. v. D R Burton Healthcare, LLC, Appeal Nos. 2023-1777, -1779 (Fed. Cir. Feb. 7, 2025) This week’s Case of the Week presents a cautionary tale for litigators to be sure they’ve timely...more

Fish & Richardson

Texas Round-Up: December 2024

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Three subjects stood out in patent litigation in Texas in December 2024: (1) knowledge of related patents, general patent portfolio, or other asserted patents do not establish the knowledge requirement for pre-suit indirect...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Knowledge of Infringement Cannot be Inferred From Non-Production of Opinion of Counsel Letter

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement. ...more

Patterson Belknap Webb & Tyler LLP

There’s an Exception to Every Rule: Judge Schofield Finds a Comparison of the Plaintiff’s Patented System and the Accused System...

In a recently published opinion, Judge Lorna G. Schofield (S.D.N.Y.) found that it was appropriate to compare the accused system to a plaintiff’s commercial system embodying the asserted patent claims, rather than the patent...more

Proskauer Rose LLP

Ventures in Venue: Selecting the Proper Patent Venue

Proskauer Rose LLP on

Amongst the many decisions an attorney makes throughout litigation, there is one choice that can shape the outcome of a case way before filing a motion, setting discovery and trial strategy, or even calling a witness: venue,...more

Jones Day

Don’t Wait To Seek Discovery Or It May Be Too Late

Jones Day on

“The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration...more

MoFo Life Sciences

Patent Vs. Trade Secret Considerations For Cell And Gene Therapies

MoFo Life Sciences on

Understanding what to patent versus what to keep as a trade secret is an increasingly important and challenging decision facing companies developing biologics products, such as cell and gene therapies, where technologies are...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

Baker Botts L.L.P. on

Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Patterson Belknap Webb & Tyler LLP

Show Me the Papers!: Judge Aaron Grants Motion to Compel Document Discovery from Third-Party

United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recently granted a motion by Samsung Electronics Co. Ltd and Samsung Electronics America, Inc. (collectively “Samsung”) to compel non-party Microchip Technology...more

Fish & Richardson

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

Fish & Richardson on

Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation...more

Patterson Belknap Webb & Tyler LLP

Time May Not Be on Your Side: Judge Ho Allows the Addition of New Parties Discovered During Stay

Defendants in patent cases should be wary of the possibility that a plaintiff will attempt to add new defendants after a stay for inter partes review is lifted. In a pending case involving patents directed to “space...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-house Counsel Without Litigation Experience Need to Know - Preparing Your Inside Team

3: Preparing Your Inside Team - Preservation, Privilege, Potential Pitfalls -This is the third in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2024

Harris Brumfield v. IBG LLC, Appeal No. 2022-1630 (Fed. Cir. Mar. 27, 2024) In our case of the week, the Federal Circuit addressed three issues in a dispute that dates back to 2010, and has been to the Court on three...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 ITC Section 337 Year in Review: Analysis & Trends: Looking Beyond Inventory Numbers to Secure a Cease and Desist Order

The Commission may grant a cease and desist order (“CDO”) when it finds a violation of Section 337. See 19 U.S.C. 1337(f)(1). Historically the Commission would grant a CDO upon a showing that a respondent had a “commercially...more

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